United States Court of Appeals 

for the Federal Circuit ______________________

WESTERNGECO L.L.C.,

Plaintiff-Cross-Appellant

v.

ION GEOPHYSICAL CORPORATION,

Defendant-Appellant

______________________

2013-1527, 2014-1121, 2014-1526, 2014-1528

______________________

Appeals from the United States District Court for the 

Southern District of Texas in No. 4:09-cv-01827, Judge 

Keith P. Ellison.

______________________

Decided: January 11, 2019

______________________

JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington, 

DC, argued for plaintiff-cross-appellant. Also represented 

by GREGG F. LOCASCIO, WILLIAM H. BURGESS; TIMOTHY 

GILMAN, LESLIE M. SCHMIDT, New York, NY; LEE LANDA 

KAPLAN, Smyser, Kaplan & Veselka, LLP, Houston, TX. 

 DAVID I. BERL, Williams & Connolly LLP, Washington, 

DC, argued for defendant-appellant. Also represented by 

KANNON K. SHANMUGAM, MASHA HANSFORD, ANDREW 

CHARLES MCBRIDE, JAMES MATTHEW RICE; FRANK 

PORCELLI, KEVIN SU, Fish & Richardson, PC, Boston, MA; 

JACKOB BEN-EZRA, BAILEY KATHLEEN HARRIS, DANIELLE J.
2 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 

HEALEY, BRIAN GREGORY STRAND, Houston, TX; FRANCIS 

J. ALBERT, OLGA I. MAY, San Diego, CA; JUSTIN BARNES, 

Troutman Sanders LLP, San Diego, CA. 

 ______________________

Before DYK, WALLACH, and HUGHES, Circuit Judges.

DYK, Circuit Judge. 

This case returns to us from the Supreme Court. 

WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 

2129 (2018) (“WesternGeco III”). The sole claim remanded 

to us by the Supreme Court is the lost profits award. The 

Supreme Court held “that WesternGeco’s damages award 

for lost profits was a permissible domestic application of 

[35 U.S.C.] § 284,” id. at 2139, reversing our decision in

WesternGeco LLC v. ION Geophysical Corp., 791 F.3d 

1340, 1349–52 (Fed. Cir. 2015), (“WesternGeco I”).1 But 

the Supreme Court did not decide other challenges to the 

lost profits award. In light of the Supreme Court’s decision and the intervening invalidation of four of the five 

asserted patent claims that could support the lost profits 

award, we remand to the district court. 

BACKGROUND

This case involves a patent infringement suit brought 

by WesternGeco L.L.C. (“WesternGeco”) against ION

Geophysical Corp. (“ION”) for infringement of claims 18, 

19, and 23 of U.S. Patent No. 7,293,520, claim 15 of U.S. 

Patent No. 7,162,967, and claim 15 of U.S. Patent No. 

1 Our decision in WesternGeco I was vacated on 

other grounds by WesternGeco LLC v. ION Geophysical 

Corp., 136 S. Ct. 2486 (2016), but was reinstated in relevant part on remand by WesternGeco LLC v. ION Geophysical Corp., 837 F.3d 1358 (Fed. Cir. 2016) 

(“WesternGeco II”). 

 
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 3

7,080,607 (“Bittleston patents”), as well as claim 14 of 

U.S. Patent No. 6,691,038 (“Zajac patent”). 

The patented technology in this case relates to marine 

seismic surveys for discovering oil and gas deposits beneath the ocean floor. The patent claims are directed to 

technology for controlling the movement and positioning 

of long streamers towed by a ship. Sensors are located 

along the length of these streamers, and they detect 

returning sound waves that are bounced off of the ocean 

floor by an airgun. The collected data is then used to 

create a map of the ocean’s subsurface geology. Controlling the positioning of the various streamers in the array

is important to the quality of the maps generated, which, 

in turn, is important to identifying drilling locations for 

oil or gas. 

Both WesternGeco and ION domestically manufacture devices, the Q-Marine and DigiFin respectively, for 

steering streamers in marine seismic surveys. WesternGeco does not sell its device, instead using it to perform 

surveys abroad for oil companies. ION does not perform 

surveys, instead supplying its device to customers who

perform the surveys abroad. This case does not involve 

any question as to lost profits from domestic surveys.

In 2009, WesternGeco sued ION for patent infringement based on ION’s sales of its DigiFin devices to WesternGeco’s competitors in the marine seismic survey 

market. After a jury trial, the asserted patent claims were 

found to be not invalid, and ION was found to have infringed all of the asserted patent claims under 35 U.S.C. 

§§ 271(f)(1) and (2). The jury awarded WesternGeco a 

reasonable royalty of $ 12.5 million and lost profits of 

$ 93.4 million, but declined to award WesternGeco enhanced damages for willful infringement. The lost profits 

award was based on 10 surveys, which, according to

WesternGeco, it would have won “but-for” ION’s sales of 

its DigiFin device to WesternGeco’s competitors. West-
4 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 

ernGeco argues that without the patented technology 

embodied in the device, ION’s customers would not have 

been able to win the bids for the 10 surveys at issue. 

In WesternGeco I we reversed the lost profits award as 

being based on an unauthorized extraterritorial application of the patent laws. Judge Wallach dissented on this 

point. 791 F.3d at 1349–52, 1354–64. We unanimously 

affirmed the district court’s refusal to award enhanced 

damages for willful infringement. WesternGeco I, 791 F.3d

at 1353–54. WesternGeco petitioned for certiorari, which 

the Supreme Court granted, vacated our original decision 

in WesternGeco I, and remanded for further proceedings 

consistent with its decision in Halo Elecs., Inc. v. Pulse 

Elecs., Inc., 136 S. Ct. 1923, 1935–36 (2016). We reinstated our earlier opinion, including reversal of the lost profits award, but we vacated the district court’s denial of 

enhanced damages and remanded for further consideration in light of Halo. WesternGeco II, 837 F.3d at 1361–64.

On remand, WesternGeco sought $ 43.6 million in enhanced damages, and the district court awarded WesternGeco $ 5 million in enhanced damages. The parties 

then entered into a stipulated “Final Judgment pursuant 

to Fed. R. Civ. P. 58.” The stipulation noted that the 

parties had agreed to the reasonable royalty amount and 

that ION had paid the full amount on November 25, 2016.

Both parties agreed not to appeal the enhanced damages 

award and provided a schedule for payment of the enhanced damages award. The only item exempt from the 

stipulation was the lost profits award, which WesternGeco had petitioned for certiorari, requesting review of 

our decision on the lost profits award. Neither party 

appealed the stipulated final judgment.

The petition was granted with respect to the lost profits award, and in WesternGeco III, the Supreme Court 

reversed our decision on lost profits, holding that “WesternGeco’s damages award for lost profits [under 35 U.S.C. 
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 5

§ 271(f)(2)] was a permissible domestic application of 

§ 284,” 138 S. Ct. at 2139, “as it was ION’s domestic act of 

supplying the components that infringed WesternGeco’s 

patents,” id. at 2138. The Supreme Court also noted that 

“[i]n reaching this holding, we do not address the extent 

to which other doctrines, such as proximate cause, could 

limit or preclude damages in particular cases.” Id. at 2139 

n.3. The Court then remanded the case to us “for further 

proceedings consistent with this opinion.” Id. at 2139.

In December 2015, the United States Patent and 

Trademark Office’s Patent Trial and Appeal Board 

(“PTAB”) held four of the six asserted patent claims—’520 

patent claims 18 and 19, ’967 patent claim 15, and ’607 

patent claim 15—unpatentable. See WesternGeco LLC v. 

ION Geophysical Corp., 889 F.3d 1308, 1331 (Fed. Cir. 

2018) (“WesternGeco IPR”). While the case was pending in 

the Supreme Court, we affirmed the PTAB’s unpatentability determination of these four claims. Id. Thus, the 

only asserted claims that remain are ’520 patent claim 23 

and ’038 patent claim 14, and it is uncontested that only 

’520 patent claim 23 may now support the lost profits 

award.

DISCUSSION

On remand from the Supreme Court, two issues remain for us to resolve: (1) the impact of the intervening 

invalidation of four of the six asserted patent claims on 

the fully paid reasonable royalty award, and (2) the 

impact of the invalidation of the four claims on the lost 

profits award and ION’s argument (presented in its 

original appeal) that “Panduit cannot be satisfied because 

ION and [WesternGeco] do not compete in the marketplace.” ION Open. Br. 56. 

I. Reasonable Royalty Award

ION challenges the fully paid and satisfied reasonable 

royalty award based on subsequent invalidation of a 
6 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 

number of WesternGeco’s asserted patent claims. See

WesternGeco IPR, 889 F.3d at 1331. ION argues that the

calculation of the reasonable royalty under GeorgiaPacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 

1120 (S.D.N.Y. 1970), would be affected by the invalidation of four of the six asserted patent claims, and therefore a new trial is required. For support, ION frames the 

decision in Fresenius USA, Inc. v. Baxter International, 

Inc., 721 F.3d 1330 (Fed. Cir. 2013) as holding that a

judgment cannot be final for purposes of intervening 

patent invalidations if any part of the litigation remains 

pending, and that here the lost profits award continues to 

be litigated and is not final. 

We disagree. Fresenius only applies where a judgment 

is not final. Id. at 1340–41 & n.9; see also Fresenius USA, 

Inc. v. Baxter Int’l, Inc., 733 F.3d 1369, 1371 (Fed. Cir. 

2013) (Dyk, J., concurring in denial of rehearing en banc). 

To be sure, finality under Fresenius requires that “the 

litigation must be entirely concluded so that [the] cause of 

action [against the infringer] was merged into a final 

judgment . . . one that ends the litigation on the merits 

and leaves nothing for the court to do but execute the 

judgment.” 721 F.3d at 1341 (alterations in original)

(quoting Mendenhall v. Barber–Greene Co., 26 F.3d 1573, 

1580 (Fed. Cir. 1994); see ePlus, Inc. v. Lawson Software, 

Inc., 789 F.3d 1349, 1358 (Fed. Cir. 2015). But Fresenius

made clear that it does not allow reopening of a satisfied 

and unappealable final judgment. 721 F.3d at 1340 (“As 

the Supreme Court’s decision in Moffitt made clear, ‘[i]t is 

a mistake to suppose . . . that . . . moneys recovered on 

judgments in suits . . . might be recovered back [after a 

patent is cancelled]. The title to these moneys does not 

depend upon the patent, but upon . . . the judgment of the 

court.’” (alterations in original) (quoting Moffitt v. Garr, 

66 U.S. 273, 283 (1861)); see Pennsylvania v. Wheeling & 

Belmont Bridge Co., 59 U.S. 421, 431 (1855). 
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 7

The particular facts of this case establish that the 

reasonable royalty award constitutes a fully satisfied and 

unappealable final judgment such that the subsequent 

invalidation of asserted patent claims does not support

reopening. Here, ION and WesternGeco entered into a 

compromise agreement resolving all of the issues in the 

case except for the lost profits award. They stipulated to a

“Final Judgment pursuant to Fed. R. Civ. P. 58,” and ION 

further manifested assent to the finality of the judgment 

as to the reasonable royalty award by not appealing the 

judgment and completing its payments under the agreement. The parties’ agreement was reflected in a joint 

motion filed in June 2017 that resolved all of the issues 

except for lost profits, although the IPR decisions holding 

that four of the six asserted patent claims were unpatentable had issued in December 2015. In these unique circumstances, it is clear that the reasonable royalty and 

enhanced damages awards were agreed to by the parties 

and subject to an unappealable final judgment, which was 

satisfied and paid in full by ION to WesternGeco. ION 

cannot now reopen the agreed and fully paid unappealable final judgment on the reasonable royalty based on the

subsequent invalidation of a subset of asserted patent 

claims.

II. Lost Profits

ION argues that, despite the Supreme Court’s decision in WesternGeco III, we should either hold that lost 

profits are not recoverable in this case or remand for a

new trial.

First, ION contends that the district court erred when 

it denied ION’s renewed motion for judgment as a matter 

of law (“JMOL”) on the theory that WesternGeco is not 

entitled to lost profits based on a Panduit theory of butfor causation because ION and WesternGeco are not 

“direct competitors.” ION sells only devices and WesternGeco sells only surveys. According to ION, because West-
8 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 

ernGeco and ION do not compete in the same market, lost 

profits in the surveys are not recoverable. For legal support, ION relies on a statement from Rite-Hite Corp. v. 

Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (en banc) that 

“the patentee must show a reasonable probability that, 

‘but for’ the infringement, it would have made the sales 

that were made by the infringer.” Id. at 1545 (emphasis 

added). ION argues that the emphasized language established a “direct competition” requirement between the 

patentee and alleged infringer. ION also relies on our 

decision in BIC Leisure Products, Inc. v. Windsurfing 

International Inc., 1 F.3d 1214 (Fed. Cir. 1993), that “[t]he 

Panduit test . . . operates under an inherent assumption 

. . . that the patent owner and the infringer sell products 

sufficiently similar to compete against each other in the 

same market segment.” Id. at 1217–20. 

We are not convinced. In context, the statement from 

Rite-Hite was addressing the requirement of “but-for” 

causation to recover lost profits, not imposing a requirement of direct competition between the patentee and 

alleged infringer that was neither at issue in the case nor 

further discussed in the opinion. See 56 F.3d at 1545. BIC

clearly focused the inquiry on whether the patent owner’s 

and the infringer’s products are adequate substitutes for 

consumers in a particular market. 1 F.3d at 1219. WesternGeco’s and ION’s devices competed by performing the 

same types of functions for surveys. And there was sufficient evidence in the record for the jury to conclude that

the products did compete—i.e., that consumers in the 

surveying market (oil companies) considered WesternGeco’s Q-Marine device and ION’s DigiFin device to be 

substitutes for their surveying needs (i.e., that the products competed in the same market). See, e.g., J.A. 3791:1–

23; 7006; 7135.

To be sure, the fact that ION sells only devices while 

WesternGeco only sells surveys may be relevant to the 

computation of lost profits. WesternGeco had two catego-
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 9

ries of lost profits: the profits attributable to providing the 

patented device and the profits attributable to providing 

other aspects of the surveys (e.g., the ship for towing the 

streamers). “[A]pportionment is required even for nonroyalty forms of damages.” Ericsson, Inc. v. D-Link Sys., 

Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014). If the application of the Panduit factors does not result in the separation of profits attributable to the patented device and the 

profits attributable to providing other aspects of the 

surveys (e.g., the ship for towing the streamers), it appears that apportionment is necessary.2 

This apportionment argument was not made in the 

supplemental briefing and was raised for the first time at 

oral argument. We conclude that the argument was 

waived on this appeal. However, if the district court 

orders a new trial on damages, ION may present arguments concerning apportionment at the new trial. 

ION’s second argument is that the lost profits award 

cannot be sustained due to the intervening invalidation of 

four of the five asserted Bittleston patent claims. Here, 

the jury found all of the asserted claims to be infringed 

and made a single lost profits award. But four of the five 

claims relied on to support lost profits liability have since 

been eliminated, and now the only remaining claim that 

could support the lost profits award is ’520 patent claim 

23, a dependent device claim. The jury instructions and 

verdict form did not instruct the jury to award damages 

based separately on infringement of each of the asserted 

claims, and the jury did not do so.

2 See Mentor Graphics Corp. v. EVE-USA, Inc., 851 

F.3d 1275, 1287–88 (Fed. Cir. 2017) (holding that “satisfaction of the Panduit factors satisifie[d] principles of 

apportionment” where, “on the undisputed facts of this 

record,” it was clear the plaintiff’s damages were “tied to 

the worth of its patented features”). 

 
10 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 

The jury could have rested its award on infringement 

of a now-invalidated claim, which cannot be sustained on 

review. The general rule is that when a “jury was told it 

could rely on any of two or more independent legal theories, one of which was defective,” the general verdict must 

be set aside. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 

831, 849–50 (Fed. Cir. 2010) (citing Walther v. Lone Star 

Gas Co., 952 F.2d 119, 126 (5th Cir. 1992)), aff’d, 564 U.S. 

91 (2011); see Northpoint Tech., Ltd. v. MDS Am., Inc., 

413 F.3d 1301, 1311–12 (Fed. Cir. 2005); United N.Y. & 

N.J. Sandy Hook Pilots Ass’n v. Halecki, 358 U.S. 613, 

619 (1959) (“[A] new trial will be required, for there is no 

way to know that the invalid [legal theory] was not the 

sole basis for the verdict.”); Maryland v. Baldwin, 112 

U.S. 490, 493 (1884). We have recognized such a rule “[i]n 

a situation—such as this one—where the jury rendered a 

single verdict on damages, without breaking down the 

damages attributable to each patent,” and at least one of 

the patent claims was held to be defective. Verizon Servs. 

Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1310 

(Fed. Cir. 2007) (citing Memphis Cmty. Sch. Dist. v. 

Stachura, 477 U.S. 299, 312 (1986)); see Accentra, Inc. v.

Staples, Inc., 500 F. App’x 922, 931 (Fed. Cir. 2013).

But we do not think a new trial is automatically required here if the jury must have found the technology 

covered by ’520 patent claim 23 was essential for performing the surveys. In other words, the award can be sustained if there was undisputed evidence that the 

technology covered by ’520 patent claim 23 was necessary 

to perform the surveys. In this area we apply a harmlessness analysis similar to our approach in the case of erroneous jury instructions. See Avid Tech., Inc. v. Harmonic, 

Inc., 812 F.3d 1040, 1047 (Fed. Cir. 2016) (“[T]he error in 

the instruction governing this central dispute at trial 

would be harmless only if a reasonable jury would have 

been required by the evidence to find non-infringement 

even without the error.”). 
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 11

WesternGeco argues that both parties’ damages experts informed the jury that infringement of any one of 

the Bittleston patent claims would support the full 

amount of the lost profits award. It cites to ION’s own 

expert, Mr. Gunderson. He testified that he “assumed 

that . . . the patents are not found to be invalid and that—

that there is infringement that is occurring on at least one 

valid claim,” “one of the base assumptions” for damages 

experts. WesternGeco Open. Suppl. Br. 15 (citing Trial Tr. 

at 4655:12–4656:3, WesternGeco LLC v. ION Geophysical 

Corp., 953 F. Supp. 2d 731 (S.D. Tex. 2013), ECF No.

507). WesternGeco reads too much into this testimony. 

Mr. Gunderson was merely identifying the basic assumption of his patent damages calculations, and his testimony 

was directed to showing that WesternGeco was not entitled to the claimed lost profits for infringement based on 

any of the patents. See, e.g., Trial Tr. at 4658, 4664, 4736, 

ECF No. 507. We do not interpret this testimony as 

supporting the theory that the entirety of the lost profits 

could be supported by infringement of any one Bittleston 

patent claim. 

WesternGeco also relies on its own expert, Mr. Sims. 

He testified that Bittleston’s lateral steering technology 

was required to perform surveys and that “my understanding is that the benefits would be attributable to each 

of the [Bittleston] patents because each of the patents 

would prohibit ION from being able to sell and supply

and, therefore, the contractors from being able to use the 

lateral steering technology.” WesternGeco Open. Supp. 

Br. 14–15 (citing Trial Tr. at 2661:13–2662:6, ECF No. 

497). 

But it is clear that Sims was simply making an assumption rather than making an independent determination the technology represented in the claims was 

necessary to perform the surveys. See, e.g., Trial Tr. at

2386:2–7, ECF No. 474. Sims was a damages expert. He

disclaimed knowledge as to the technical aspects, and 
12 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 

explicitly relied on others to support his assumption that 

infringement of any one of the Bittleston patent claims 

would have been necessary to perform the 10 surveys at 

issue in the lost profits award. See, e.g., Trial Tr. at 

2378:24–25 (“I confirmed with Mr. Walker, that there was 

a requirement for lateral steering”), 2386, ECF No. 474;

Trial Tr. at 2657–58, ECF No. 497. Sims testified that he 

relied on Mr. Walker for help in identifying surveys where 

the patented technology was required, but Mr. Walker 

disclaimed any knowledge as to the scope of the patents. 

See Trial Tr. at 1760–61, ECF No. 453. Thus, this testimony cannot support the jury award on lost profits.

WesternGeco has also not cited to any other specific 

testimony that infringement of ’520 patent claim 23 was 

necessary to perform the 10 surveys at issue. Instead, at 

oral argument, WesternGeco argued that the jury was 

informed generally that the lateral steering technology 

was required for the surveys at issue and that claim 23 

covers part of that technology. But lateral steering technology was also reflected in the four other, now-invalid, 

asserted claims—’520 patent claims 18 and 19, ’967 

patent claim 15, and ’607 patent claim 15. For example, 

now-invalid ’520 patent claim 18 recites:

An apparatus comprising:

(a) an array of streamers each having a plurality of streamer positioning devices there 

along;

(b) a control system configured to use a control 

mode selected from a feather angle mode, a 

turn control mode, a streamer separation 

mode, and two or more of these modes. ’520 

Claim 18. 

And now-invalid ’520 patent claim 19 recites:

The apparatus of claim 18 wherein the control 

mode is the feather angle mode, and the control-
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 13

ling comprises the control system attempting to 

keep each streamer in a straight line offset from a 

towing direction by a feather angle.

The only surviving claim, ’520 patent claim 23, recites:

The apparatus of claim 18 wherein the towing 

comprises ending one pass, turning a towing vessel having the streamers attached thereto while 

throwing out the streamers before beginning another pass, with the control mode in the turn control mode during the turning and throwing out. 

To sustain the lost profits award, the record must establish that there was no dispute that the technology covered 

by claim 23, independent of the technology covered by the 

now-invalid claims (e.g., ’520 patent claim 18 and 19), was 

required to perform the surveys at issue. This determination must be made on the present record.

Because of inadequate briefing on this issue prior to 

oral argument,3 and because the district court is in a 

better position to consider the issue in the first instance, 

we remand to the district court to determine whether a 

new trial on lost profit damages is required. See Verizon,

503 F.3d at 1310; DDR Holdings, LLC v. Hotels.com, L.P., 

773 F.3d 1245, 1262 (Fed. Cir. 2014). The district court 

may deny a new trial on lost profits if, but only if, it 

concludes that WesternGeco established at trial with 

undisputed evidence that ’520 patent claim 23 covers

technology necessary to perform the surveys upon which 

the lost profits award is based.

3 The parties subsequently filed Fed. R. App. P. 

28(j) letters addressing where in the record the jury was 

informed that the technology covered by ’520 patent claim 

23 was necessary to perform the surveys at issue.

 
14 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 

CONCLUSION

For the foregoing reasons, we reject ION’s challenge 

to the reasonable royalty award and remand to the district court for further proceedings as to the lost profits. 

We also reinstate sections I, II, and IV of our decision in 

WesternGeco I and sections I and II of our decision in

WesternGeco II, which were not affected by either the 

initial vacatur and remand from the Supreme Court, 136 

S. Ct. 2486 (2016), or the Supreme Court’s subsequent 

decision in WesternGeco III. 

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED

COSTS

No costs.